Exploring the Global Technology Community Through Strategic Technology Licensing
by M. Buckley

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Despite the inherent challenges, global partnerships come easy for David Silver. The APL researcher has worked under grants in Germany and Japan, serves on the board of a Canadian health-technology company, and has collaborated with Hungarian doctors on a formula for eye drops that prevent hazy vision after laser surgery.

"Working with people in foreign countries isn’t that foreign to me," says Silver. "It doesn’t always matter that there’s a line on a map, or even a great distance between you. When you have a good idea you find ways to work with people."

Silver is among several Lab inventors whose work involves, or is attracting attention from, foreign partners. Careful management of international involvement has been, and continues to be, a high priority for the Lab. But as Silver proves, this doesn’t mean that foreign interactions are unwelcome. The Lab views foreign interactions as an opportunity to assess APL’s technology in a global context. And what better way than through the licensing process? In contrast to research collaborations, the licensing process essentially enters the Laboratory’s technology into the global arena, matching it against other innovative technologies developed around the world. At the same time, the process serves as a window into foreign technology development taking place.

APL’s Office of Technology Transfer has more than two dozen agreements with firms in Canada, the United Kingdom, France, Greece, Australia, Italy, Sweden, Denmark, India, the Netherlands, and Brazil. Other countries have taken an interest in technologies such as QT Viewer 3-D mapping software, WAVES ocean wave propagation software, and a macular degeneration treatment device. It is not surprising that, considering the progress of globalization, international licensing opportunities have been on the rise.

"When it comes to licensing technology, our priority is to look in Maryland, then regionally and nationally," says Kristin Gray, director of APL’s Technology Transfer office. "But we know that our technology has wide appeal and that our inventors have opportunities to work with international partners. We want to facilitate these interactions as best we can, given the security and regulatory constraints. APL has developed a rigorous protocol for vetting opportunities to ensure that we steer clear of problematic situations."

Seeing Opportunity

This year, Silver’s eye drops were licensed to Illinois-based AdPharma Inc., which has satellite offices in India. To develop the drops, Silver worked with Adrienne Csutak, András Berta, and József Tözsér of the University of Debrecen, Hungary. Silver and Csutak began collaborating in 1998 while each held fellowships at the Wilmer Eye Institute in Baltimore; the team gradually expanded to include Berta and Tözsér. At that time, the University of Debrecen did not have a policy to handle intellectual property and technology transfer, so the APL office managed those aspects of the international partnership. Over the years, the researchers spent time at each others’ institutions, met during international ophthalmology conferences, and traded notes over the phone and through e-mail. The team still works together on research papers, the most recent appearing in the November 2007 issue of the Johns Hopkins APL Technical Digest.

"With technology making it easier to collaborate, it’s not about where people are sitting," Silver says. "What really helps is that people click, that they have some common ideas and thoughts and expertise that fit together. A good idea is still the heart of the matter."Photo of David Silver with the caption "David Silver wins APL’s 2000 Invention of the Year Award"

APL leadership would like to see more partnerships like Silver’s and this year is supplementing Lab internal research and development projects to add international collaborators to the project teams. "We recognize that more and more important technologies are being developed offshore," says John Sommerer, APL’s chief technology officer. "By setting aside internal funds, we’ll encourage staff to establish connections with international technology leaders and increase our ability to contribute to and benefit from critical technologies developed in other countries."

Regulatory Expertise

Once APL determines that a technology has international commercial potential, the next step is navigating the regulatory seas of licensing the invention internationally, something the APL offices of Technology Transfer and Export Control have been working very closely on since the Export Control office was established in 2001. In fact, experts in both offices are trained to help inventors work with international partners while following the applicable federal regulations and APL practices and procedures.

"We’ve taken dramatic strides in making export compliance user friendly," says Jahna Hartwig, APL’s associate general counsel with responsibility for export control matters. "Researchers have been reluctant to work with companies outside the United States [because of the regulatory steps], but we’re working hard to help them understand that with planning, even though you might have to move through hoops, we can help them accomplish many of their objectives."

State Department regulations govern the export of items developed for defense applications; the Commerce Department controls other technologies. Hartwig determines which department’s rules apply to a given technology and is an expert on the different government applications and licenses that might be needed. But before any paperwork is processed or technological information is shared, the Office of Technology Transfer screens each potential foreign licensee and its country of origin to make certain they are not prohibited from obtaining U.S. technology and that the proposed interaction is appropriate.

"We do the work before we consider engaging in licensing negotiations with international companies," says Heather Curran, technology and marketing manager and department export coordinator in APL’s Office of Technology Transfer. "That way, we know what countries and companies we can license a technology to, or whether it can be manufactured or sold in another country. No matter what the level of outside interest may be, it has to make sense to go outside the United States, especially when manufacturing is involved. Unless there aren’t suitable domestic manufacturers or if it isn’t economically feasible, licensed products should be made in the United States." Curran is referencing a regulation in the Bayh-Dole Act, the legal framework for transfer of university-generated, federally funded inventions to the marketplace. Exclusively licensed products that will be sold in the United States must be "substantially" manufactured in the United States.

APL is guiding a pair of inventions through that process now. One effort would ensure that a flexible microelectronics board—low-profile circuitry that can conform to any surface and seems tailor-made for smart cards, implantable biomedical devices, and similar items—can be manufactured in Malaysia. The other would clear the export of a driver alert system to Japan, where it could help decrease the number of drivers who fall asleep at the wheel.

"Certainly, these efforts benefit the Lab, but this is really good for the licensee companies also," Hartwig says. "We can help the licensees feel more comfortable that they will be able to navigate the export processes."

 

Patents and Protection

Recognizing the opportunities in markets around the world, APL strategically files international patent applications, which will make it easier to reach out to the global market.

Of the dozen largest, active licensing agreements APL expects will produce significant license income for the Lab over the next five years, two-thirds involve technology protected by foreign patents. The Technology Transfer office estimates that about 70 percent of future income will come from deals that include intellectual property with international protection.

But without early and comprehensive export control authorization, even the best patents may not be able to flourish internationally. "If you want to ensure that vital technologies have a broad impact and provide widespread benefits, you have to start thinking right away about export control and other issues relevant to working across international boundaries," Heather Curran of APL’s Office of Technology Transfer says. "Taking a global view, realizing the possibilities for your technologies, and doing your homework all give you an advantage in the modern economy."



   
 
© 2007 The Johns Hopkins University